Appeal No. 2001-2611 Page 4
Application No. 08/566,576
In the rejections before us in this appeal, the examiner has determined (answer, pp.
3-7) that it would have been obvious at the time the invention was made to a person of
ordinary skill in the art to have modified the cutting insert of either Friedman or Satran by
(1) having the front relief flank include an upper relief flank surface, a lower abutment
surface inset with respect to the upper relief flank surface, and an intermediate surface
serving to bridge the upper and lower surfaces as suggested by Carl's reversible cutting
2
plate 10 ; and (2) inclining the cutting edge at a non-zero leading angle and the upper relief
flank surface as suggested by Niemi's insert 10 having a cutting edge 12.3
Most if not all inventions arise from a combination of old elements. See In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every
element of a claimed invention may often be found in the prior art. See id. However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See id. Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination
Each frontal face of Carl's reversible cutting plate 10 includes an abutment surface 14 axially set2
back with respect to a cutting-edge section 16 (see Figure 6), such that they together with an oblique
transition face 17 define a recess open at the edge.
Niemi's cutting edge 12 and front relief surface are inclined at a non-zero leading angle H as3
shown in Figure 2.
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